Dark ‘n’ Sue Me

My friend Jacob Grier, who splits his time between writing and tending bar, draws my attention to a brewing (so to speak) conflict over the trademark for a mixed drinked called the Dark and Stormy. Rum manufacturer Gosling has the trademark on the term, and insists that it can only be used to describe drinks containing Gosling’s own rum. They were none too happy when a competitor, Zaya, started running ads in Imbibe magazine urging bartenders to substitute Zaya’s rum when mixing a Dark ‘n’ Stormy. Jacob’s take on this seems spot on:

Gosling’s might be on solid legal ground, but as a craft bartender I’m firmly on the side of Zaya. I use Gosling’s in a Dark ‘n’ Stormy because it tastes good, but it’s hardly written in the fabric of the universe that no other rum pairs so perfectly with ginger beer. If another rum company thinks they’ve made a product that’s even better, I want them to tell me about it. Using unique ingredients in classic cocktails is part of what makes tending bar creative.

One of the interesting things about this dispute is how deeply confused non-lawyers are about the various legal regimes commonly described under the rubric of “intellectual property.” Jacob also links to this article about trademarks in the bartending business that’s a particularly egregious offender. The article is talking about trademarks, but the author treats the terms “patent,” “copyright,” and “trademark” as though there were interchangeable. They’re not. To quickly recap: copyrights apply to expressive works like music, books, movies, and software. They’re granted automatically and last for the life of the author plus 70 years. Patents cover inventions like light bulbs and transistors. They require a lengthy and expensive application process and last for only 20 years. Trademarks protect brand names like “Coca-Cola” and “Nike” (and “Dark ‘n’ Stormy”). They’re relatively easy to get, and they last forever.

I’ll spare you any more of the boring details. But perhaps the most important difference is that trademarks have a dramatically different policy rationale from patents and copyrights. Copyrights and patents are designed to create legal monopolies that drive up the price of creative works and thereby reward authors and inventors for their creativity. Although consumers may benefit from the resulting increase in creativity, the short-term effect is to force them to pay more than they would in a competitive market. Trademarks aren’t like that at all. The point is not to limit competition. To the contrary, the point is to enhance competition by ensuring that consumers know what they’re getting. This is why it’s emphatically legal to run comparative advertising featuring your competitor’s trademarks. Microsoft may own the “Windows” trademark, but Apple is free to use it as a punching bag as long as they don’t mislead consumers about what they’re getting.
The same principle applies in the Dark and Stormy case. The point of trademark law is to make sure consumers know what they’re getting (whether it’s Gosling or Zaya), not to give Gosling a monopoly on the concept of mixing ginger beer with rum. I haven’t seen Zaya’s ad and I’m not a trademark lawyer, so I don’t want to speculate on the legal merits of Gosling’s position. But certainly the apparently purpose of Zaya’s ad—encouraging bartenders to substitute their own rum in place of Gosling’s—is entirely within the spirit of trademark law. If the net effect of Gosling’s threats is that consumers wind up with fewer opportunities to try mixing ginger beer with different kinds of rum, that is certainly not what trademark law is supposed to accomplish.

Unfortunately, this doesn’t seem to be widely understood among the general public. And as a consequence, when a company claims that its trademark gives it broad powers to control how certain words are used, many people believe them. As a result, a legal regime that’s supposed to be about protecting consumers from fraud winds up protecting producers from competition, to consumers’ detriment.

Not having read the stories you cite, it seems to me the problem here is that Gosling’s was able to get a trademark on what seems to be a commodity product. I guess that’s a question in itself. Is a ‘Dark n Stormy’ a generic term for a mixed drink with ginger beer and rum, or is it the case that when customers ask for a Dark n Stormy they are expecting that no other rum will be used but Goslings? When you order a “Rum and Coke” do you have a expectation that no Pepsi will be used? When you order a Seven and Seven do you have an expectation that only 7-Up and Seagram’s Seven will be used? I wonder what Jacob has to say about this.

Jerry, that is the tough question. Gosling’s would obviously like us to think that when people say Dark and Stormy, they mean they want Gosling’s and ginger beer. But I’m far more informed than the average consumer when it comes to cocktails, and while I knew Gosling’s was the traditional choice for the drink I never knew until that NYT piece came out that there was a trademark on the drink name. My guess is Zaya didn’t realize that either, nor do I think most other bartenders and customers did.

It might be worth noting that practice differs in Australia, where Bundaberg rum actively markets use of its rum in a Dark and Stormy. So international use would suggest that the drink just means dark rum and ginger beer.

Some bartenders have taken to calling the drink a “Jamaican Mule” instead, skirting the issue.

I think if you order “Rum and coke” the carbonated portion should be coca-cola, and you can complain to the bartender if it isn’t. But if pepsi launches an ad campaign saying that “rum and coke” tastes better with pepsi instead, we can’t prosecute them.

Trademark law is a little more schizophrenic than you make it seem, Tim. Look at the cases involving university logos on t-shirts, using trademarked keywords in targeted ads, and admittedly knock-off designer handbags. It’s not all about consumer protection. It’s a bit, at least, about the notion that there’s something that is the trademark owner’s in there (e.g. brand reputation) that we ought to preserve. Or at least that’s the analysis my IP professor at Stanford, Mark Lemley, gives.

Good point Alex. Of your examples, the only one I’m specifically familiar with is the keyword advertising cases, and my impression is that that’s still a rather unsettled area of law. But you’re probably right that I’m describing things as being a little rosier than they actually are.

But certainly the apparently purpose of Zaya’s ad—encouraging bartenders to substitute their own rum in place of Gosling’s—is entirely within the spirit of trademark law.

It all depends on whether the ad encourages bartenders to do this with or without telling the customer. If the ad encourages them to do this without telling the customer, then trademark law needs to step in and stop the practice so that customers are informed. Forcing the bartender to have a brief conversation with the customer about which brand of rum to use is entirely within the spirit of trademark law. So is stopping an ad that implies it is okay for a bartender to forego having a conversation about which brand of rum to use.

Besides, in order to maintain the trademark, Gosling’s needs to use it. This means they need to take steps that will inevitably (among other things) make people more aware of the idea mixing of rum and ginger beer. The benefit to Gosling’s is that they get some oversight on how the more specific “Dark and Stormy” label is used. The quid pro quo for society is that we get to consider (on a mass scale) the heretofore unconsidered (on a mass scale) possibility of a ginger beer and rum drink.

Here is a good question to ask:

If the Gosling company never existed, then would Zaya now be running an advertisement directed to the combination of rum and ginger beer?

This counterfactual is impossible to answer, of course, but it is the only question really worth asking. My hunch is that the answer is: “no, Zaya would not fing ginger beer worth focussing on without the spotlight Gosling’s has thrown on it.” If this is true, then it means that trademark law actively promoted innovation here. The possibility of trademark protection incentivized Gosling’s to either invent a drink, or publicize an obscrure drink with the idea that they would get some degree preferential treatment in the market. IOW, trademark law is not necessarily neutral with respect to innovation, but can actually promote innovation, especially forms of innovation not quite creative enough to be patentworthy.

I am glad to see that the Dark’n Stormy is getting some press, however I think some are missing the point. I am the Brand Director for Gosling’s Rum in Bermuda and an enthusiastic mixologist. We are not attempting by trade marking the Dark’n Stormy to discourage anyone mixing Rum with Ginger Beer. To my knowledge we have never told anyone not to mix there Rum with Ginger Beer.

I appreciate your comments on the Patent, Copyright and Trademark, which are all correct. Dark’n Stormy is a trademark belonging to Gosling’s and here in Bermuda we sell a RTD version of the cocktail available in a 12 oz can, as well as cakes, jams and sauces all bearing the Dark’n Stormy name and trademark.

You raise a good point about competition. Competition is great for the consumer and the consumer wants to know what he is getting. By trade-marking our drink we are NOT limiting competition, in fact we encourage it. Ginger Beer is very popular in Bermuda and locals mix all sorts of spirits with it including a variety of other Rums. However if someone orders a Dark’n Stormy they are expecting to get Gosling’s Black Seal Rum and Ginger Beer. Quite simply if it is another Rum and Ginger Beer, Zaya for example it is not a Dark’n Stormy therefore they must come up with another name.

Having not seen the Zaya ad either, you are correct in stating technically they can encourage consumers to try Zaya Rum and Ginger Beer rather than having a Dark’n Stormy, they just can not call their creation a Dark’n Stormy. Perhaps call it the Z-Storm or something like that.

We have had similar issues with Cruzan Rum, another brand that we import to Bermuda. In trademark litigation we never threaten a company it is just simply a cease and desist using the name Dark’n Stormy for your Rum and Ginger beer. Get the creative juices flowing and come up with your own name for Rum and Ginger Beer. Trademarks do not stifle creativity rather encourages it.

The Jamaican Mule is a great alternative if using a Jamaican Rum. Moscow Mule is Smirnoff and Ginger Beer and it was the cocktail that started the vodka revolution in North America. The reason others are trying to use the name is simply they are trying to capitalize on the investment Gosling’s Rum has made on the cocktail and the fact it is a cool name. Prior to Gosling’s marketing the Dark’n Stormy outside of Bermuda, Ginger Beer was relatively unknown in the united states and certainly not considered as a cocktail mixer in recent years.

Dark’n Stormy is not a commodity product, it is an original cocktail creation in Bermuda using Gosling’s Rum and Ginger Beer. When you order a Rum and coke you will get whatever Rum the bartender feels like pouring. That is why Bacardi is training there consumers to call it by name Bacardi and Coke. The bartender would not substitute Rum if the consumer asks for Bacardi and Coke, therefore why should anything but Gosling’s Rum be substituted for the Dark’n Stormy.

If Bacardi could prove that the original Mojito and Daiquiri was indeed made with their Rum then would have a chance at getting the trademarks to those names, however they can not. It is difficult to enforce a trademark; however Gosling’s Rum have been doing it for the past several decades.

99.9% of the time when the consumer is not using Gosling’s Rum in the Dark’n Stormy it is not intentional it is because they do not know any better. Therefore we can not be upset with them, however try to educate them about the history of the cocktail and the fact that we have a trademark for the name. Articles like what appeared in the NYT and the various blogs as a result are a great step in beginning to educate the consumer and industry professionals alike about the Dark’n Stormy.

Bundaberg Rum from Australia also has a trademark. There is a story behind this and in fact Bundaberg has the rights to the name Dark’n Stormy, however only in Australia. Every year in November Bermuda plays host to the World Rugby Classic which sees a team from Australia come to Bermuda every year to compete. The Classic has been in existence since the early 1970’s and it was the players who took Bermuda’s National Drink, the Dark’n Stormy back to Australia where Ginger Beer and Rum was also popular. Therefore Bundaberg trademarked the drink in Australia before Gosling’s Rum did. At the moment Gosling’s Rum is not distributed in Australia therefore it is not an issue. However Bundaberg can not promote the Dark’n Stormy with Bundaberg Rum outside of Australia.

The Dark’n Stormy has encoraged several mixologist/bartenders to be creative. An example is the perfect storm, simply a Dark’n Stormy with the addition of pineapple juice, or one of my favorites is the Gold Mint, which is the Gosling’s Gold Bermuda Rum, Ginger Beer and a drop of Crème de Menthe. So my advice to other Rum producers if you want to jump on the Ginger Beer band wagon you had better get creating and come up with your own name for the cocktail. The Dark’n Stormy is a Bermuda Original and the trademark offices agree.